By SIMON HENDERY
A Court of Appeal judgment confirming one retailer's right to display a competitor's flyer outside its stores has clarified new trade mark and comparative advertising laws.
In March, hardware chain Mitre 10 won a High Court injunction stopping competitor Benchmark Building Supplies displaying Mitre 10's brochures outside its shops.
Benchmark
had added orange stickers to the brochures indicating prices for products that were cheaper in its stores than at Mitre 10.
But a bench of three Court of Appeal judges has now discharged the injunction, saying Mitre 10's claim that its trademark was being infringed was not valid.
The case hinged on interpretation of the new Trade Marks Act 2002, which makes it legal to engage in comparative advertising.
Under the act, fair, non-detrimental use of a competitor's registered trade mark is permitted as part of a comparative advertisement.
Mitre 10 argued that Benchmark's use of its brochures damaged its trade mark, but the judges disagreed.
They said Benchmark's intention had been that Mitre 10's trade marks should perform the same function as they performed when Mitre 10 distributed the brochures.
It could not, therefore, be said that the distinctiveness of Mitre 10's marks was in any way damaged.
They ruled that Benchmark's use of the flyers did not amount to a copyright infringement, as putting a sticker on the brochures did not recreate or adapt the original copyright work.
Damian Broadley, a partner with law firm A J Park, said the decision was a useful judgment on a new piece of legislation.
"This case helps to clarify for businesses what is acceptable when using others' trade marks in comparative advertising."
